WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Asianet Satellite Communications Limited v. Into Champon, Nethighway
Case No. D2018-1798
1. The Parties
The Complainant is Asianet Satellite Communications Limited of Thiruvananthapuram, India, represented by DePenning & DePenning, India.
The Respondent is Into Champon, Nethighway of Alhambra, California, United States of America (“United States”), represented by Into Champon & Assoc., A Law Corporation, United States.
2. The Domain Name and Registrar
The disputed domain name <asianet.com> is registered with eNom, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 8, 2018. On August 8, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 9, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 10, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 14, 2018.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 15, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 4, 2018. The Response was filed with the Center on September 1, 2018.
The Center appointed Adam Taylor as the sole panelist in this matter on September 12, 2018. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant, which trades under the name “Asianet”, describes itself as a supplier of “digital cable TV, broadband Internet services, cable cast channels, events & teleshopping” in the Malayalam language in Kerala, India. The Complainant first launched its services in 1992. It now has some 170,000 subscribers.
The Complainant owns a number of Indian trade marks including No. 1017594 for the word ASIANET, filed June 18, 2001, registered April 6, 2005, in class 16.
The Respondent is a California lawyer. He registered the disputed domain name on June 12, 1997.
As of April 29, 1999, there was an “under construction” webpage at the disputed domain name headed “ASIANET.COMTM”, with a subheading: “ASIAVILLAGE.COMTM”. Beneath this were number of boxes with labels such as “CHATROOMS / BULLETIN BOARDS”, “NETHIGHWAY.COMTM, “SHOPPING CENTER”, “LAONET.COM (under construction)” and “VIETNET.COM (coming soon)”.
As of December 7, 2000, and March 31, 2002, there were what appears to have been operational versions of the above webpage at the disputed domain name.
The disputed domain name currently redirects to the website for the Respondent’s law practice.
5. Parties’ Contentions
A summary of the Complainant’s contentions is as follows:
The Complainant is one of the most well-known Indian entertainment channels broadcasting in the Malayalam language.
The Complainant’s trade mark ASIANET was coined by the Complainant’s founder and is well known worldwide. The Complainant’s television channels have reached the homes of Indians in over 60 countries including the United States. The Complainant plans to expand its current business to 250 channels.
By virtue of its longstanding and uninterrupted use of the term “Asianet”, the Complainant has acquired common law rights in this name, which is uniquely related to the business of the Complainant. Its turnover ranged from some INR 150 crores in 2006/2007 to some INR 446 crores in 2016/2017.
The Complainant owns many domain names which include the term “asianet”.
The disputed domain name is identical to the Complainant’s trade mark.
The Respondent lacks rights or legitimate interests in respect of the disputed domain name.
The Complainant has not authorised the Respondent to use its trade mark.
The Respondent has not made any legitimate offering of goods or services via the disputed domain name.
There could be no plausible explanation for the disputed domain name other than to misappropriate the reputation of the Complainant’s trade mark, which is a coined term. This demonstrates that the Respondent lacks rights or legitimate interests.
The disputed domain name was registered and is being used in bad faith. The Respondent had constructive notice of the Complainant’s trade mark by virtue of the Complainant’s widespread reputation.
Previous UDRP cases have established that a respondent should have known of a complainant’s trade mark if it is a coined word or in widespread use on the Internet and that such knowledge is an indicator of bad faith registration, that passive holding can amount to use in bad faith and that use of a domain name by someone unconnected with a complainant is suggestive of opportunistic bad faith.
The Respondent’s lack of a legitimate offering of goods or services indicates that the Respondent’s purpose is to usurp the Complainant’s reputation and goodwill. Domain names are important corporate assets and it is critical that third parties are not allowed to unfairly benefit from misuse thereof.
A summary of the Respondent’s contentions is as follows:
The Respondent registered the disputed domain name along with other domain names including <laonet.com> and <nethighway.com> (both registered in1996), <vietnet.com> (1997) and <ethai.com> (1998).
The Respondent’s purpose was to create a coordinated set of interlinked websites for the purposes of “community and marketing”. Mirroring the Respondent’s California law practice, they were designed to focus primarily on South East Asian ethnicity and language, with domain names representing Laotian, Thai and Vietnamese heritage, to be hosted under the umbrella of the disputed domain name. The domain name <nethighway.com> was intended to be broader still, encompassing “the entire Asianet.com entity” as well as the Respondent’s additional business interests. The Respondent’s widespread fame in the Laotian and Thai communities was the impetus for this project.
From 1997 to the early 2000s, the Respondent offered a range of services via these domain names including email, personal web pages, online shopping, online bulletin boards, employment listings, searchable databases of Asian restaurants, news links and chatrooms, all focused principally on the above communities located in California. Over this period, the Respondent incurred development and hosting costs relating to the domain names.
While the venture was moderately successful, various factors, including lack of resources, resulted in the diminishing of functionality of the websites over time.
Over the period 2006 to 2008, the Respondent published a printed magazine entitled “Laonet”, based on one of the Respondent’s domain names, with advertising which included an “Asianet.com” logo. Over 10,000 copies of the first issue were distributed.
Many of the users of the website at the disputed domain name have migrated to Facebook groups created by the Respondent: LaoNetwork and ThaiNetwork. The Respondent hopes to revert activity back to the disputed domain name at some point in future.
The Respondent has received many unsolicited enquiries to buy the disputed domain name over the years, including offers of as much as USD 200,000, but has always declined in the hope of achieving his original vision for the disputed domain name and its related domain names.
The word “Asianet” was not coined by the Complainant for which it can claim legitimate trade mark rights. The Respondent’s own application for a United States trade mark for “ASIANET.COM”, filed in March 2000, before the Complainant’s own trade mark applications in India, was rejected on grounds that it was descriptive of Internet services referable to Asia. Similarly, the term “Asianet” is descriptive of the Complainant’s services and inherently not amenable to trade mark protection.
All other attempts to trade mark “Asianet” in the United States were either refused, cancelled or invalidated.
Contrary to the Complainant’s claim to have coined the term “Asianet”, Google searches show that many others are using the same term in a wide variety of ways, including within India where the Complainant is not even the largest user of the term.
The Complainant’s services cater to a specific regional sublanguage of India, which represents just 3% of the Indian population. According to census returns, less than 180,000 Malayalam speakers resided in the United States in 2000, concentrating mostly in eastern states. The likelihood of confusion between the Complainant’s very regional television programming in a specific Indian dialect and the Respondent’s limited Southeast Asian communities is non-existent.
The Respondent possesses rights or legitimate interests, having made significant legitimate use of the disputed domain name for a multitude of bona fide services.
There is no evidence supporting the Complainant’s claim of “reputation misappropriation”, which claim belies the fact that few would have heard of the Complainant outside its Malayalam-speaking base in India. There is no evidence that the Respondent ever targeted Malayalam speakers; in fact, its use of the disputed domain name was aimed at his own Southeast Asian communities.
The disputed domain name was not registered and used in bad faith.
Prior to receiving the Complaint, the Respondent had never heard of the Complainant or the Malayalam language. Nor is there any reasonable basis upon which he should have known of their existence.
At the time of registration of the disputed domain name, Internet search was more restricted than today. Wikipedia, the major source of readily available information about the Complainant, did not even exist then.
There is no evidence that Malayalam speakers in the United States were likely to have even heard of the Complainant but, even if they had, census data shows they would probably be located on the eastern seaboard, whereas the Respondent is based in California. The Respondent has no ties to the
Malayalam-speaking population or wider Indian community, whether in Asia or the United States.
The Complainant has never attempted to register a trade mark in the United States.
It does not appear that the Complainant had any knowable Internet presence until well after the Respondent registered the disputed domain name. The Complainant’s first domain name was registered in April 2002.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has established rights in the mark ASIANET by virtue of its Indian registered trade marks.
The Respondent claims that the term “Asianet” is descriptive and inherently not amenable to trade mark protection. However, where a complainant holds a nationally or regionally registered trade mark, this prima facie satisfies the threshold requirement of having trade mark rights for purposes of standing to file a UDRP case. See section 1.2.1 of he WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Accordingly, for the purposes of the UDRP, the Panel must treat the Complainant’s registrations as valid unless and until they are officially invalidated.
In any case, the Complainant has supplied evidence which satisfies the Panel that, in relation to the Complainant’s activities in Kerala, India, the mark has become a distinctive identifier which consumers associate with the Complainant’s services and that the Complainant has thus also established common law trade mark rights in the term. Section 1.1.2 of WIPO Overview 3.0 makes clear that the fact that secondary meaning may only exist in a particular geographical area or market niche does not preclude a complainant from establishing trade mark rights (and as a result, standing) under the UDRP.
For the above reasons, the Panel concludes that the disputed domain name is identical to the Complainant’s trade mark.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
It is unnecessary to consider this element in light of the Panel’s conclusion in section 6C below.
C. Registered and Used in Bad Faith
The Panel notes the following:
First, while the Complainant has demonstrated a reasonable profile in respect of its services focussed on Malayalam speakers in Kerala, India, there is no evidence showing that in 1997, or indeed since, it has acquired a significant reputation in the various other countries claimed by the Complainant – including in the United States where the Respondent is located. The only documents produced by the Complainant relating to activities outside India consist of correspondence with a single customer in Qatar. For example, the Complainant has not provided any evidence of turnover or of website/subscription/television-viewing statistics outside India.
Second, the Respondent has established that there are many other businesses and organisations worldwide using the name “Asianet” in diverse ways, including in India, where the Complainant itself is located.
Third, the Respondent has provided evidence of a significant number of third party enquiries to buy the disputed domain name over the years, indicating that the name comprised therein is far from unique to the Complainant – notwithstanding its claim of having “coined” the term.
Fourth, the Respondent’s own application for a United States trade mark for ASIANET.COM, filed in March 2000, before the Complainant’s own trade mark applications in India, was rejected on grounds that it was descriptive of Internet services referable to Asia. This indicates that term “Asianet” may be seen as relatively weak in trade mark terms.
Fifth, the Respondent has provided a plausible legitimate explanation for his registration of the disputed domain name, namely to provide services targeted to his own South East Asian community located in the United States, in conjunction with other related domain names including <laonet.com>, <nethighway.com>, <vietnet.com>, and <ethai.com>. Most importantly, the Respondent has produced evidence showing that, in the early 2000s, he did indeed use the disputed domain name in a manner consistent with his explanation.
Sixth, there is no evidence that the disputed domain name has ever been used to target Malayalam speakers or otherwise in a manner which is relevant to the Complainant’s business.
For the above reasons, the Complainant has failed to satisfy the Panel that the Respondent was likely to have been aware of the Complainant on acquisition of the disputed domain name in 1997.
The Complainant raises the issue of “passive holding”. Arguably this doctrine is inapplicable because the disputed domain name has been used in the manner explained above. In any case, the factors which typically arise in a case of passive holding are entirely absent here. See section 3.3 of the WIPO Overview 3.0. There is also a lack of any other indicia generally suggesting that the Respondent set out to target the Complainant. See section 3.2.1 (first paragraph) of the WIPO Overview 3.0.
For the above reasons, the Complainant has not satisfied the Panel that the Respondent registered and/or used the disputed domain name in bad faith and the Panel finds that the Complainant has failed to establish the third element of paragraph 4(a) of the Policy.
For the foregoing reasons, the Complaint is denied.
Date: September 24, 2018